Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Friday, 30 January 2004

The IPKat has heard from a friendly Euro-mole that the English translation of the Advocate General's Opinion in the copyright/essential facilities case of IMS v NDC Case C-418/01 is ready and will be sent today for posting on the internet. There is however no guarantee that it will appear on the internet today.

Meanwhile, the IPKat notes that the European Court of Justice is expected to hand down its decisions in Koninklijke KPN Nederland (the POSTKANTOOR case) and Campina Melkunie (the BIOMILD case) on 12 February, a little more than two years after the Advocate General gave his Opinion in them. The AG's Opinion in Koninklijke KPN Nederland has only recently been made available (IPKat, 9 January), while his Opinion in Campina Melkunie is still awaited.

Findlaw has reported that Columbia Pictures and Warner Bros filed lawsuits against Carmine Caridi, an actor and longtime member of the Academy of Motion Picture Arts and Sciences, for allegedly leaking "screener" copies of movies that were then reproduced and distributed on the internet. Caridi, 70, appeared in "The Godfather: Part II" and "NYPD Blue". He told investigators he sent VHS copies of about 60 movies he received each year to a friend, Russell Sprague, who used a software program to convert the VHS tape into DVD format and then sent the original tapes back to Caridi. Investigators said a search of Caridi's Hollywood apartment turned up 36 original Academy screener tapes, including "The Last Samurai," "In America," "Shattered Glass" and "Mona Lisa Smile". Warner Bros seek damages of at least $150,000 for each infringing use of its releases "The Last Samurai" and "Mystic River." Columbia wants to elect between actual damages and $150,000 for each infringing use of "Something's Gotta Give" and "Big Fish". Caridi, who said he received no money for the films, allegedly told investigators he believed Sprague was a film buff and merely wished to watch them. Sprague was arrested and charged with criminal copyright infringement last week. Caridi has not been charged.

The IPKat notes that, under UK copyright law, sending a VHS copy of a film to someone else who turns it into a DVD is not of itself a civil copyright infringement. However, infringement is committed where a person doesn’t just supply the tape but authorises any subsequent infringing acts done by others: see the Copyright, Designs and Patents Act 1988, s. 16(2).

The BBC reports that Chris Gorog, the head of the US music download company Napster, has been complaining that the shenanigans of collecting societies in the various European states have delayed the launch of a European version of the legal incarnation of the Napster site. He blames the hold-up on the complex talks that have to be conducted with the collecting societies in each of the separate states. “As each day passes that Napster isn't operating in Europe, substantial amounts of money are lost to pirates because there is no legal alternative available," he said.

While the IPKat thinks that it’s nice (if ironic) of Mr Gorog to concern himself with the damage to the music industry done by illegal downloaders, he’s not entirely happy with the prospect of the Napster chief’s expectation that he should be granted a licence as of right. Such an expectation is reminiscent of a compulsory licensing scheme. However, the IPKat can see that a licence may be desirable if Napster is the only legal downloading service available and not licensing it will suppress the creation of a new product and downstream market. The IPKat is also somewhat disconcerted by Mr Gorog’s implicit assumption that he should be able to treat Europe as a single party for the purposes of negotiating copyright notices, rather than the sovereign states of which it is made up.

“Interim Injunctions in Intellectual Property Cases” was the title of the lecture given last night at the Institute for Advanced Legal Studies, under the auspices of the Society for Advanced Legal Studies. The IPKat was in attendance. Speakers Simon Cohen and Nigel Stoate, both litigators with Taylor Wessing, gave a sparkling review of current British practice and then contrasted it with the pre-trial relief available in France, Germany and Belgium. Starting from the American Cyanamid principles, Simon Cohen explained how the prime consideration was whether the irreparable loss suffered by the IP owner if interim relief were not granted was greater or less than the irreparable loss suffered by an alleged infringer if that relief were granted. He described the “clear the path” approach, adumbrated by Mr Justice Jacob (as he then was) and subsequently approved by the Court of Appeal in SmithKline v Apotex . By this approach, the fact that the defendant knew the claimant had a hostile intellectual property right but didn’t try to remove it (through revocation or cancellation proceedings) or escape it (through a declaration of non-infringement) was itself a ground upon which interim relief should be granted. Nigel Stoate then reviewed practice in other jurisdictions, notably saisie-contrefaçon in France and saisie description in Belgium. The disappointingly small audience of brave souls who had fought their way through a blizzard to reach the lecture were then treated to a short but pleasurable Q and A session, from which emerged the consideration that interim injunctions seem to be sought less frequently these days now that applications for summary judgment have become more popular.

The IPKat was most interested in the "clearing the path" approach to interim relief, but he noticed that it only seems to have been employed in the UK in patent cases. Would this doctrine be of (i) applicability and (ii) utility in interim relief proceedings involving other IP rights, especially copyright and trade marks, he wonders?

Wednesday, 28 January 2004

The January 2004 issue of the Sweet & Maxwell law series The European Copyright and Design Reports (ECDR) has now been published. It contains, among other cases, the following decisions which are available for the first time in English:

* Gabriele Guercio and Umberto Allemandi (Court of Turin, Italy): reproduction for “criticism, discussion or teaching”, without the consent of the author -- is this a criminal infringement of copyright?

* Teosto v A Taxi Driver (Supreme Court, Finland): whether music played on a car radio/CD player by a taxi driver was a “performance in public”.

Former track event star David Bedford has won his fight with The Number, the company that operates the 118 118 directory enquiries service, over the use of 70s-style athletes in its adverts. Ofcom, the telecommunications regulator, has upheld a ruling of the late Independent Television Commission. The regulatory body held that the adverts caricature Bedford "by way of a comically, exaggerated representation of him". Bedford, a former 10,000 metres world record holder, immediately announced he would launch court action against The Number to recover damages. Meanwhile, despite Ofcom’s ruling, The Number, who insist the characters in its adverts are based on other runners from the Seventies including American athlete Steve Prefontaine, remains free to continue to use the two Bedford lookalikes.

Ofcom ruled that the two runners caricature David Bedford by way of a comically exaggerated representation of him looking like he did in the 1970s, sporting a hairstyle and facial hair like his at the time and wearing running kit almost identical to the running kit that was distinctively worn by him at the time. Ofcom added that Bedford had not necessarily suffered actual financial harm, adding that its decision that the company had breached the Advertising Standards Code was punishment enough and that banning the adverts would be disproportionate. Bedford interpreted the ruling otherwise, saying that no new adverts using the runners could be shown in the future without further breaches of the code.

The IPKat, who thanks Tim Pinto, MediaBeak and others for this new item, is purr-plexed at the Ofcom ruling. Even if Bedford had not actually suffered financial harm, the gratuitous use of his image by The Number could at least be expected to create the false impression that he had endorsed the 118 118 service. This is an actionable passing off according to Mr Justice Laddie and the Court of Appeal in Irvine v Talksport.

Tuesday, 27 January 2004

Wordspy has recorded another intellectual property-based neologism, the "six degrees patent". Defining this as "the informal name sometimes applied to a patent for a network database and system used in some social networking sites", Wordspy explains that six degrees patents are named after the theory that everyone on earth is connected by no more than six intermediaries.

Greendale was rocked today by the shock news (via the BBC) that much-loved postmistress, Mrs Goggins, is suspected of having appropriated her name from the uncle of the current prisons minister Paul Goggins. It appears that John Cunliffe, the author of the Postman Pat series of books, knew Mr Goggins’ uncle when the two were teachers in Manchester. “I think it highly unlikely he just made the name up from scratch, but took it from my uncle's name” claimed Mr Goggins, MP for Wythenshawe and Sale East, during an interview on Saturday. Mrs Goggins released the following statement to the press: “Ee, it’s a bad job”.

The IPKat wonders whether applying someone else’s name, or even their personality to a character in a work of fiction infringes any privacy or personality rights that that person may have. He also sends warmest regards to his fellow feline Jess.

Monday, 26 January 2004

The full text of Mr Justice Lindsay's judgment in Douglas and Zeta-Jones and OK! v Hello! (see the IPKat's blog of Sunday 25 January 2003. "All in a Good Cause") is now freely available on the BAILII
website.

On 15 January the IPKat reported on a press release announcing a strike of employees of the Office for Harmonisation in the Internal Market (OHIM), the Office which administers Community trade marks (CTMs) and Community designs. He queried whether there really was a strike or whether the press release was a hoax. Well, he has since received clarification from the OHIM's Staff Committee to the effect that there had indeed been a strike. The strange form of the press release was the result of the Committee’s unfamiliarity with that medium. Almost all the coverage of the strike was in the Spanish media, which is why the IPKat had no luck seeking independent English-language corroboration of it.

The strikers’ Committee maintains that it is in the interests of the staff and the users that this action was carried out. It says:

“If the impression that little work is being done in the Office actually arises, this may well be due to the situation facing the staff. Too few people are having to carry out more and more tasks for which they were neither hired nor adequately trained. This causes longer and longer delays for cases which are difficult”.

Giving an example, the Committee cite the new OHIM policy of getting the secretarial staff to classify goods and services according to the Nice classification, a practice it describes as “a danger to the system”.

The IPKat would like to hear comments from the following: (i) employees who are anxious to expose poor working practices within the Office; (ii) CTM applicants and their representatives, who would like to mention either particularly good or particularly bad experiences arising from their dealings with OHIM and (iii) representatives of OHIM itself, who bear the responsibility for the efficient working of the CTM system.

Sunday, 25 January 2004

Issue 2 of the Sweet & Maxwell European Trade Mark Reports has now been published, slightly ahead of its cover date of February 2004. Cases available in English for the first time include

• Guinness United Distillers & Vintners v Koninklijke Cooymans BV (Court of Appeal of Den Bosch, the Netherlands): the plain white bottle shape of MALIBU coconut liqueur was held validly registered and infringed;
• Mast-Jagermeister v A & S Vin & Spirit Aktiebolag (Supreme Court, Stockholm): confusing similarity between JAGER and JAGERMEISTER alcohol marks on the one hand and JAGARBRYANNVIN on the other;
• Pebex Trade Mark (Supreme Administrative Court, Poland): battle between two companies for control of the use of the company name/trade mark PEBEX.

This issue also features two important European Court of Justice decisions -- OHIM v Wrigley (on the registrability of DOUBLEMINT) and Adidas v Fitnessworld -- as well as a number of Court of First Instance decisions.

If you know of any European trade mark cases that you think should be reported, please send us an email.

I won't be able to give my Monday afternoon lecture this week, 26 January. Fortunately my place will be taken by John Cahir (Queen Mary Intellectual Property Research Institute), who will be lecturing on the Community Design. Please be sure to attend this important lecture, which covers a part of the syllabus which is of increasing importance.

The Community Design Regulation hereOfficial information concerning the Community Design hereThe tale of a happy Community design owner here

The IPKat has followed with acute interest the battle between Hello! magazine on one side and OK! magazine and the Douglas family on the other over the publication of wrongfully-taken wedding photographs (see blogs dated 10, 12 and 25 November 2003 and 16 January 2004)). The Lawyer has now reported that, in a judgment which should soon be reported, OK! Magazine, Michael Douglas and Catherine Zeta-Jones must pay legal costs of £2m for acting in their confidentiality case against Hello!. Mr Justice Lindsay deferred his judgment on the costs of the High Court action in last week's hearing, but lawyers working on the case are expecting the final numbers to be revealed in open court in the next two weeks. The beneficiaries of this payment are solicitors Addleshaw Goddard and the barristers it instructed. Hello!'s lawyer Chris Hutchings, who left solicitors Charles Russell last autumn to set up his own firm M-Law, is understood to have billed his client £1m, with around 30 per cent of the bill going to counsel. This means that Hello! now faces making payments totalling £4m, taking into account the £1m damages that Lindsay J ordered it to pay to OK! last summer.

The IPKat marvels at the thought that £3m in legal costs might ever be regarded as a bargain. However, considering (i) the number of occasions the parties were heard in court over the past couple of years, (ii) the intensity with which this dispute was fought and (iii) the fact that two of the issues raised in the course of this battle have already ended up before the Court of Appeal, £3m is now looking like something of a bargain.

The Register reports that DVD CCA (Copy Control Association) has given up on its attempt prevent the desemination of the DVD decryption law through a trade secrecy action. It had previously obtained a preliminary injunction against Californian publisher, Andrew Bunner, who had disclosed the DeCSS code. However, because of the wide spread availability of the code it simply became impossible to argue that it was a secret anymore.

The IPKat has mixed feelings. On the one hand the fact that something becomes public doesn't mean that a person who disclosed it when it was still secret should be let off the hook. On the other hand though, why should a person who's been placed under a duty of confidence be forced to stick to that when the rest of the world is at liberty to disclose the information that he is in possession of?

Friday, 23 January 2004

There was an interesting feature in yesterday’s Daily Telegraph about British fruit. The Environment Agency is seeking to rescue some of the less well-known British fruit varieties from extinction. Some of these rare strains have quaint and romantic names such as the Gilliflower dessert apple, the Port Wine Pippin and the Arlingham Schoolboys. Others have unsavoury names such as the Hens' Turds apple, Bloody Bastard pears and the Shit Smock plum, which may have caused consumers some embarrassment in the course of shopping for them.

The IPKat commends the Environment Agency for its diligence, but notes that the resurrection of the use of those fruits’ names may reduce the range of availability of names available for registration as trade marks. It should not be assumed that such terms, when applied to fruit, are automatically unregistrable as being contrary to morality just because they happen to be offensive.

The subscription service All England Direct reports on the unsuccessful judical review mounted by Saira Ali Ahmed, the wife of the notorious criminal Charles Bronson (or Ali Charles Ahmed as he is known following his conversion to Islam). Charles Bronson was originally jailed for 7 years in 1974 but following a series of violent attacks against fellow-inmates and officers, his sentence was extended to life-imprisonment. In June 2001 he married Saira Ahmed in Woodhill maximum security prison in Milton Keynes. Unfortunately, the Prison Service’s nuptials fund didn’t extend to the full Rolls Royce and photographer treatment. Instead, photos of the happy couple were taken by a prison officer using a prison camera. Thus, when Mrs Ahmed sought permission to use the pictures in an autobiography she was writing, the prison governor refused permission based on the Crown Copyright which the pictures were subject to. Mrs Ahmed said that she had no intention to commercially exploit her husband’s notoriety and she offered to give any profits to charity. However, the Govenor was not convinced and neither was the Director of High Security Prisons, to whom she appealed. Finally she applied for a judicial review of the decision.

McCombe J found that there had been no error in the prison authorities’ decision. The decision had not been unfair because the authorities had no obligation to give reasons. The reason for this was that the fact that it was not determining any of Mrs Ahmed’s rights meant it was not a quasi-judicial tribunal. Additionally, because there was no effect on her liberty, her rights under the European Convention of Human Rights were not at issue. She had no expectation of being able to publish the photographs because she knew of the objections to their publication. The defendant’s public interest argument against their publication was valid. Even if Mrs Ahmed herself did not intend to profit, it was in the public interest that others seeking to make money from Charles Bronson’s notoriety (which would happen if the pictures were published) would do so.

The IPKat thinks that this decision is perfectly correct on the issue of copyright. The whole point of copyright is that the author can control how his work is used, if he choses to allow it to be used at all. The Crown is no different in this respect. However, the IPKat wonders whether, by depriving the couple access to their wedding photos, the Prison Service has breached the Ahmeds’ right to a family life under the ECHR.

I won't be able to give my Monday afternoon lecture this week, 26 January. Fortunately my place will be taken by John Cahir (Queen Mary Intellectual Property Research Institute), who will be lecturing on the Community Design. Please be sure to attend this important lecture, which covers a part of the syllabus which is of increasing importance.

The Community Design Regulation hereOfficial information concerning the Community Design hereThe tale of a happy Community design owner here

Thursday, 22 January 2004

Ananova reports that actors have attacked TV networks for "rushing" end-of-programme credits which list their names. The actors' union, Equity, says there are increasing examples of the names of actors and actresses being run through too quickly or even dropped entirely. Equity Council member Jean Rogers had a flood of responses condemning TV networks when she wrote in the union magazine about "inadequate" credits. Actors complained that rushing through credits was insulting and sent out the message that artists were "inconsequential". An Equity spokesman told the BBC the issue was with TV policy-makers "undervaluing" artists rather than with programme producers who did attach credits. He cited BBC sitcom ‘The Vicar of Dibley’ as an example of how credits could be used "creatively". A final joke always follows the credits, and most viewers stay in order to watch it. The BBC adds that, in its written guidelines on commissioning, credits are important to programme-makers:

"but with few exceptions they are of limited interest to our audience. The BBC's credit policy balances our willingness to reflect significant creative contributions with a recognition that too many credits make viewers switch over or switch off".

The BBC has said that "channel surfing" increases by up to 400% when credits are shown as viewers lose interest. An ITV spokeswoman said there was no industry standard for size or speed of end-of-programme credits. "However, where it is within our control, ITV ensures that its end credits, including those that are split screen, are clear and legible," she said.

The IPKat is proud that both his masters make a particular point of reading the credits, which contain information that is always valuable and often amusing. Unlike authors, who have a moral right to be acknowledged as creators of their respective works, actors have no such legal entitlement and what acknowledgement they get depends on what their union can negotiate.

To find out what the people who aren’t actors actually do, click hereHow to become an actor here or here

Findlaw reports that the UK Trade Mark Registry has turned down an opposition by the British Ministry of Defence to the New York Mets’ application for the METS word and device mark. The MoD had argued that its MET mark, based on the operations of the Meteorological Office, was likely to be confused with the American Baseball team’s mark under s.5(2) of the Trade Marks Act. Not so, said the Hearing Officer. Though the goods in question were similar or identical, the parties’ marks were not similar enough to cause confusion especially because (i) of the presence of the device in the METS mark, (ii) the lack of a meaning for the word METS, together with the fact that the addition of an “S” could not be transforming the word into a plural or a possessive form meant that consumers would notice that it was different from the word MET.

The IPKat doesn’t know weather it’s wise to comment, but he’s not letting that cloud his judgment. Instead, he hails this decision for providing guidance on whether there is conceptual similarity between marks with meaning and marks without a meaning (there are 2 options here – the lack of meaning of one mark could mean that conceptual similarity is considered irrelevant or that the marks are considered conceptually similar) and the treatment to be accorded to the addition of an “S” on the end of an existing mark (snow mean feat).

Wednesday, 21 January 2004

The Daily Telegraph reports that a German theatre production of Samuel Beckett's masterpiece "Waiting for Godot" has been scrapped after a publisher's objection to the use of actresses. "Beckett wouldn't have wanted it", ruled the Fischer publishing house of Frankfurt, which owns the German rights. The play was only 10 days from opening night, after six weeks of rehearsals. The decision left the cast and Philip Kochheim, the director of the Landesbuhne Niedersachsen Nord, furious. Kochheim turned the two characters, Lucky and Estragon, into female parts alongside their male partners, Vladimir and Pozzo, in a tense, sexually-charged interpretation of the drama. A spokesman for Fischer however noted that people in theatrical circles were well aware of the notorious conditions attached by the Irish playwright: "This is not us being difficult, it's been determined by Beckett and is strictly adhered to by his heirs - that only men can wait for Godot." Kochheim and his cast now plan to hold a reading of the play, on condition that "no movement" is involved. Literary agency Curtis Brown administers the English-language performing rights for the play, originally published in French in 1952 as "En attendant Godot". The company said Beckett's estate had asked it not to comment on the reasons for his punctiliousness. Beckett's moral rights must be respected until the year 2059, 70 years after his death.

It seems to the IPKat that, in these days of human rights and equality of sexes, the exercise of the author's moral right appears to be one of the last bastions of political incorrectness.

Tuesday, 20 January 2004

On 13 January the IPKat reported (“Labelling controversy made in the EU”) on the European Commission’s proposal to launch a “Made in EU” label to compete with the “Made in the USA” and “Made in Japan” mega-labels. Businesses in several EU Member States are unhappy about this, since they want consumers to know where the goods they buy are actually coming from -- particularly those companies that emphasise their national ties and trade on their Britishness (like Burberry) or Scottishness (like Scotch whisky).

The latest British development is the establishment of Walpole, a new lobby group. Walpole, which represents a hundred of Britain's most famous luxury brands, is embarking on a media campaign to stop Brussels introducing a generic "Made in EU" label. The group is teaming up with Italian and French lobbyists to fight the proposals. Says Robert Bensoussan, chief executive of luxury shoe brand and Walpole member Jimmy Choo: "EU means UK, Italy, France and their wealth of high-end craftsmanship, tradition and expertise. But it also means Poland, Portugal and Turkey, which cannot be compared. An EU label will only favour cheating and will hurt the final consumer".

The IPKat is glad to see brand owners taking the initiative. If any of our readers knows the name of anyone in the Commission who is responsible for the “Made in the EU” initiative and can be made to defend it, can he or she please send the IPKat an email or post details in the Comment slot below.

One further point: the IPKat is a little dismayed to see Portugal, Poland and Turkey being stigmatised as lacking in craftsmanship, tradition and expertise: those countries have also fine traditions of their own, but just lack the big brand image to go with them.

After it had failed to have Animated’s NELLIE THE ELEPHANT mark revoked (see yesterday’s “Nellliegate: Part 1” blog), Dash applied for the mark to be revoked under s.46(1)(b), arguing that there had been a period of at least five consecutive years in which Animated had not made use of the mark because it had used the mark to describe the content of its cartoons, rather than to denote the trade origin of the Class 41 goods for which it was registered. This was a bit of a second-best for Dash because, when a mark is declared invalid it is as if the mark never existed, whereas where it is revoked it is only deemed not to have existed from the date of the application for revocation.

This time though Dash succeeded and Animated’s mark was revoked as it had not been used for five consecutive years. To avoid revocation, Animated’s use of the NELLIE THE ELEPHANT sign had to be trade mark use, i.e. use in accordance with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services on which it is used. A previous OHIM case (Francis Fitzpatrick v Disney Enterprises No. 951/2001) had held that the use of characters in the title of books did not count as trade mark use. Similarly, a UK House of Lords case (R v Johnstone [2003] UKHL 28) had held that the affixing of a name of a band to a CD was not necessarily trade mark use. In both cases there was no trade mark use because the names were not seen by the public as indicators of origin.

Here the evidence (an invoice and a flyer referring to NELLIE THE ELEPHANT as the name of a cartoon character, a brochure for the production company showing NELLIE THE ELEPHANT as the name of a cartoon) showed only use of NELLIE THE ELEPHANT as a cartoon character to indicate the subject matter of the films. This merely indicated content and did not indicate the trade source of the Class 41 services for which it was registered. Instead, the name of the production company was used to indicate the source of the content and anyone wishing to avail themselves of Animated’s services would have done so by reference to the name of the production character rather than by reference to the name NELLIE THE ELEPHANT.

The IPKat notes that this case brings the concept of trade mark use back from the dead, despite the ECJ’s marked failure to mention it in Arsenal v Reed .

Monday, 19 January 2004

Friend of the IPKat Michael Edenborough placed a trunk call to IPKat HQ to inform the IPKat about this mammoth decision of the UK Trade Mark Registry concerning the fall-out when the licensee of the copyright in the song “Nellie the Elephant” applied to register NELLIE THE ELEPHANT as a trade mark.

Dash acquired the copyright in the children’s song “Nellie the Elephant” in 1956. In 1987 it granted a licence in respect of the composition to Animated, which intended to use the song in a series of cartoons featuring a female pink elephant named Nellie. Animated applied for and was granted a trade mark for NELLIE THE ELEPHANT in Class 41 in 1989. Tsk, tsk, said Dash, and off it went with a trumpety-trump to apply for the mark to be declared invalid, claiming: (i) it had an earlier right under s.5(5)(b) of the Trade Marks Act 1994 because it had copyright in the title of the song; (ii) it had an earlier right because the taking of the phrase “Nellie the Elephant” constituted a taking of a substantial part of the song as a whole and (iii) Animated had registered the mark in bad faith because Animated had only a non-exclusive licence and so knew that Dash may have wanted to license the song to other undertakings that would need to use the phrase “Nellie the Elephant”.

“Not on your Nellie!” said the hearing officer. Thus, the application for a declaration of invalidity failed because Dash could not show that Animated’s NELLIE THE ELEPHANT trade mark conflicted with Dash’s copyright in the “Nellie the Elephant” song for the purposes of s.5(4)(b), nor could it show bad faith on Animated’s part:
♦ Although neither s.5(5)(b) nor Article 4(4)(c) of Directive 89/104 on which it is based are specific about the date from which the prior right must exist, by analogy to Article 4(4)(b) of Directive 89/104 and s.5(4)(a), the earlier right under s.5(5)(b) must predate the application date of the challenged trade mark. Dash had satisfied this requirement because it acquired copyright to “Nellie the Elephant” in 1956 but Animated did not apply for its trade mark until 1989.
♦ Dash could not base its challenge on the title to “Nellie the Elephant” While it is not impossible for a title to attract copyright, the title of “Nellie the Elephant” did not. A literary work must “afford either information and instruction, or pleasure in the form of literary enjoyment”. It was common ground that “Nellie the Elephant” did not inform or instruct. It also did not give pleasure in the form of literary enjoyment. It only gave pleasure when used as part of the lyrics of the musical composition, and not when the words were taken on their own. Any other view of the matter would potentially expand the scope of copyright in relation to song titles.
♦ Dash also could not base its challenge on its copyright in the lyrics of “Nellie the Elephant”. The taking of “Nellie the Elephant” did not constitute the taking of a substantial part of the lyrics of the entire song. Substantiality must be assessed qualitatively rather than quantitatively. Previous case law suggested that the taking of a title of a song did not constitute the taking of a substantial part of the copyright work. It was also questionable whether, if the title itself did not attract copyright, it was possible for it to qualify for protection on the basis that it was a substantial part of the musical composition.
♦ Animated’s mark had not been registered in bad faith. The licence to use “Nellie the Elephant” granted to Animated was non-exclusive and therefore Dash could have granted licences for similar uses to other undertakings. However, it had made no attempt to do so or to exploit the IP rights in the composition or name between acquiring the copyright in 1956 and Animated’s application to register the mark in 1989. Furthermore, Animated had no obligation to consult Dash about their plans and so it could not be said to have acted covertly.

The IPKat notes that once again it has been recognised that copyright can theoretically subsist in single words or phrases, without actually finding that the particular phrase in question is protected. He thinks it’s strange though (but perhaps unavoidable) that the Trade Mark Registry has decided what is essentially a copyright case. The story’s not over yet though…visit the IPKat tomorrow to find out what happen next to Nellie.

European businesses are being urged to buy a licence for Linux (the operating system with the cute penguin trade mark) in order to avoid legal action by SCO, which claims the operating system unlawfully includes some of its computer code. California-based SCO has hitherto been pursuing US companies for the same reason but now is extending the licensing program overseas. SCO said it would probably launch legal action this year against high profile European companies that decline the chance to take out a licence. The company has put aside $16m for a litigation fighting fund. This will fuel its global legal fight to win cash back from Linux users as well as its forthcoming action against IBM, which SCO claims has taken some of its intellectual property and used it in Linux. SCO's claim that Unix was the inspiration for parts of Linux is widely disputed. Many Linux users worry that the threat of legal action will scare people off adopting the free-to-use operating system that has recently become popular. The widening of the licensing programme raises the prospect of SCO launching many more lawsuits against end users of Linux that do not take up a licence. In 2003 SCO wrote to more than 1,000 US firms known to be using Linux, asking them to take out a licence if they used the disputed elements of the program. Few are thought to have taken out a licence and so far SCO has not launched legal action against any US end users.

SCO is taking legal action against users of Linux, rather than the creators of the software, because of the terms under which the open source program is used. "We do not want our product, our property, our IP given away for free", said Chris Sontag, head of the SCO Source division seeking licence payments from users. "We are defending our rights" he told BBC News Online. Sontag said taking out a licence was a cheap way to avoid potential legal action and was less expensive than the indemnification schemes set up by firms such as Novell to bail out Linux users that end up in court.

The IPKat is frankly sceptical of SCO’s claims which, like the estate of John Cage’s demands for royalties (see IPKat blog “When Silence is a Racket”, 13 January 2004), look suspiciously like an unwarranted demand with menaces.

Sunday, 18 January 2004

Further to the IPKat’s blog of 11 January (“Ex-Beatle’s Physician Pursued from Beyond the Grave”), it has now been revealed that Gilbert Lederman, the doctor accused of forcing George Harrison to autograph a guitar as the former Beatle lay dying, has agreed to dispose of the guitar. The settlement was reached after two days of talks between lawyers for Harrison's family and for the doctor. Under terms of the settlement, the Harrison family will give Lederman's son a replacement guitar and drop the lawsuit. The signed guitar and the autographs "will be disposed of privately", the lawyers' statement said. The Harrison family had previously sought to obtain the guitar and autographs and had rejected the doctor's offer to donate the instrument to charity. According to the statement, the settlement was not an admission of wrongdoing on anyone's part.

The IPKat wonders whether the settlement includes provisions restricting the Lederman family's ability to use the name "George Harrison" in talking up the price of its replacement guitar.

The IPKat has just got his paws on the second edition of Intellectual Property Law by Woolfson College Cambridge law fellow Jennifer Davis. Published in the Butterworths Core Text series, this book packs quite a punch, providing a tidy summary of UK (and some EU) intellectual property law in fewer than 400 lucidly written and well-referenced pages. Footnotes are abolished, though important cases and significant articles are cited and referenced for further reading.

At just £14.95, this cheerful and authoritative paperback will be welcomed not only by intellectual property students but also by busy lawyers who want a good overview of where British IP law happens to be right now.

Saturday, 17 January 2004

No doubt all trade mark lawyers worth their salt have committed the following phrase to memory and a few will have it etched on their tombstones in years to come:

“The [insert what’s being tested for: distinctive character and confusion are favourites] must be analysed from the viewpoint of the average consumer of such types of products or services, the consumer being deemed to be reasonably well informed and reasonably observant and circumspect”.

The way the IPKat sees this, there are two ways of reading this because, while the word “reasonable” is placed before “well informed” and “observant”, it is not used before “circumspect”. Is the consumer (i) reasonably well-informed, (ii) reasonably observant and (iii) reasonably circumspect or is he (i) reasonably well-informed, (ii) reasonably observant and (iii) circumspect. Anyone who can explain why the word “reasonably” was omitted from the final phrase and which is the correct reading (either by email or by leaving a comment) is in line to win the IPKat’s usual mystery star prize.

Find out if you’re circumspect here King James says be circumspect here Compose circumspectly here Listen with circumspection here

Friday, 16 January 2004

The IPKat has learned from the BBC that Hello! magazine has won leave to appeal over the damages it was ordered to pay after publishing wedding pictures of Catherine Zeta Jones and Michael Douglas. The happy couple had previously signed an exclusive £1m photo deal with rival magazine OK! to publish photos of their 2000 wedding. In April the High Court ordered Hello! to pay more than £1m damages, after it published six unauthorised shots. Hello! is disputing whether it should pay damages to the magazine or stars. Hello!’s lawyer Chris Hutchings said the magazine was appealing initially over whether it should be liable to pay damages. Only 15,000 copies of the magazine actually went on sale before OK!'s publication, he said. In April Mr Justice Lindsay ruled that Hello!'s pictures had been a breach of commercial confidence. He later ordered it to pay £1,033,156 to OK!, (see IPKat blog, 12 November 2003) and a further £14,500 in damages to the Hollywood couple. The couple has been given leave of appeal over privacy issues. In the original case, the actors said Hello!'s publication of photographs was an invasion of their privacy but the claims were not upheld. The couple were only awarded £14,500 in damages for breach of confidence.

The LexisNexis All England Direct subscription-only service reported yesterday on Beiersdorf AG and another v Ramlort and another, an application for summary judgment heard before the Chancery Division’s Vice-Chancellor, Sir Andrew Morritt. Beiersdorf, who made and sold NIVEA products, sued for trade mark infringement and applied for summary judgment on the ground that the defendants had no real prospect of successfully defending the claim. The defendants resisted the application, saying that Beiersdor’s trade mark rights had been exhausted since the goods they sold had been first marketed in the European Economic Area with that company’s consent. Beiersdorf denied they had consented to the marketing of those goods and claimed that the documents the defendants relied on as proving Beiersdorf’s consent were forgeries.

The court rejected Beiersdorf’s application and ordered that their claim should go to a full trial. When an application for summary judgment is made, the court could not be expected to conduct a mini trial and the defendants were entitled to contest, by means of cross-examination, the question whether the documents of authorisation were forged.
The IPKat agrees. The defendants’ case may indeed be unmeritorious and may ultimately fail. Even so, the likelihood that Beiersdorf would ultimately succeed should not be a ground upon which a defendant is deprived of the right of putting its case.

The Nivea teddy here Nivea products here and here that Beiersdorf doesn’t control, plus another Nivea product here that anyone can control.
Play an oily Nivea game here

Yesterday Advocate General Ruiz-Jarabo Colomer delivered his opinion in Nichols , considering the registrability of surnames as trade marks, specifically whether they are capable of distinguishing goods. Nichols plc, a UK company, applied to register NICHOLS to designate automatic vending machines and products sold from those machines. The UK Trade Mark Registry allowed the application with regard to vending machines but refused it for goods and drink sold therein, stating that the sign was a common surname. In doing so, it applied its policy, spelt out in PAC 6/00, that surnames should not be registered as trade marks where: (i) the surname occurs frequently in the London telephone directory and (ii) there are a large number of operators in the market for the goods or service designated. Nichols appealed to the High Court, questioning whether the Registry’s policy on surnames was compatible with Directive 89/104. In consequence, the court referred a number of questions on the subject to the ECJ and the Advocate General suggested that the questions should be answered as follows:

♦ Personal names can act as trade marks. They are capable of meeting the Article 2 capacity to distinguish criteria and are not on the list of excluded marks under Article 3(1)(c). Furthermore, the own name defence (Article 6) and Article 2 (which mentions personal names) both envisage names as being registered as trade marks.
♦ It is not for the ECJ to make value judgments about national legislation. Instead, it is limited to ruling on the compatibility of the legislation with EU rules. Here, while the UK Registry’s approach differed from that favoured by the ECJ, no sufficient reasons were put forward in favour of choosing another method. The distinctiveness of a surname must be analysed in relation to the specific market concerned, and the fact that names are often used as trade marks in a particular sector does not mean that it can be assumed that that is the case for all sectors. Since there is nothing to justify treating surnames differently, any judgment as to their distinctiveness must observe the same guidelines as those applicable to other sorts of word marks. Under this analysis, it is necessary to take into account that in some sectors commons surnames are assiduously used to designate commercial origin and therefore have no capacity to distinguish. However, this will depend on the specific case and no a priori all-embracing or abstract rule on the issue can be made.
♦ There is no “keep free” interest where a surname is excluded from registration under Article 3(1)(b). The purpose of that article is to prevent the registration of signs that have no distinctive character and cannot therefore act as a trade mark. There is no general interest in maintaining such signs that are incapable of identifying the commercial origin of the goods or services which they designate in the public domain.
♦ The fact that the effect of the registration of a surname as a trade mark is limited by the “own-name defence” in Article 6(1)(a) is irrelevant to the assessment of distinctiveness under Article 3(1)(a).

The IPKat says there weren’t really any major surprises in this Opinion. The meaning of Article 3(1)(b) and how it is applied is pretty clear and this was just an application of it. Likewise, the fact that (i) “keep free” is relevant to Article 3(1)(c) and not 3(1)(b) and (ii) the fact that defences shouldn’t be taken into account when considering the scope of registrability is well-travelled ground.

Thursday, 15 January 2004

Another bumper IP day for the ECJ, with Advocate General Ruiz-Jarabo Colomer issuing his opinion on the registrability of surnames in Nichols (see separate post) and Advocate General Leger issuing his opinion in Heidelberger Bauchemie on the registrability of two-colour marks. Sadly though, the later opinion is not yet available in English, only German, French and Portuguese.

“European civil servants strike on 15 January 2004 over danger to Community Trade Mark system

Employees of the Office for Harmonization in the Internal Market (OHIM) in Alicante are on strike because they consider the Community Trade Mark system to be in danger due to bad management and staff policies.

The staff of the EU’s largest agency, OHIM, voted almost unanimously to go on strike as a further measure to protest against the policies of OHIM’s management.

Despite rapidly growing numbers of Community Trade Mark (CTM) applications (from 46,000 in 2002 to over 58,000 in 2003 - which is the highest figure registered in the history of the Office), the Management of the OHIM is of the opinion that 30% of the staff need to leave the Agency, where in fact the Office’s needs require it to hire additional staff to carry out its tasks as required by the law and expected by its users.

The resulting drain in highly skilled staff, combined with a reorganization of the OHIM itself, has led to a dramatic decrease in quality and a sharp increase in the time taken to carry out its core tasks.

The employees of the OHIM, through their staff representatives, have repeatedly sought to redress this situation in discussions with the management. However, although some members of management acknowledge the existence of serious problems off the record, management is not prepared to change its approach, thus having made today’s strike inevitable. It is the hope of the employees of the Office that this will finally cause Management to rethink the situation and to enter into meaningful negotiations about staffing levels and management policies required to fulfil the expectations of the users of OHIM”.

This press release purports to come from the Secretariat of the Staff Committee of the OHIM. The IPKat has published it because (i) he doesn’t normally receive press releases, so this one has novelty value and because (ii) although he is a cat, he is highly sensitive to the needs of the underdog. Nonetheless he considers the press release to be an elaborate hoax for the following reasons:

• no contact name is given for further enquiries
• nor was publication embargoed until any specific time or date
• there was no mention of any strike on the OHIM website or on any other IP organisational website
• no reference to such a strike could be found on a Google search

Judging by comments made privately to the IPKat over the past few years, there must be many users of the CTM system who believe that the strike is quite unnecessary because there is little or no discernible difference between OHIM employees working normally and not working at all. Other users of the CTM system whose experiences have been thoroughly positive, may be feeling that OHIM is quite well resourced right now as it stands; they wonder what this dispute is all about.

If this press release is genuine, the IPKat will be pleased to use this blog as a means of allowing each side to state its case -- though it would be appreciated if, for the sake of transparency, all people doing so would identify themselves by name and status or job description. In addition, the IPKat asks bloggers who file CTMs (or who act for businesses that do) to express their opinions as to whether OHIM is inadequately resourced or overstaffed.

Tuesday, 13 January 2004

The IPKat has been in touch with the European Court of Justice concerning the long-awaited English language version of the Advocate General's Opinion in Case C-418/01IMS Health, a hugely important decision on abuse of a dominant position by a copyright owner. He has heard from his mole that "the translation is being proof-read now. Normally it could go straight on to the internet but a few queries have come up which in the absence of the translator, may delay that until the end of January". At present, in additon to the English translation, the Danish, Greek and Dutch translations are also awaited.

The Times reports that the EU plans to scrap the “Made in Britain” label in favour of a “Made in the EU” label that will be applied to all goods manufactured within the European Union. The plan is that this will challenge the “Made in the USA” and “Made in Japan” mega-labels and will enhance the EU’s image abroad. However, UK business and even the UK Government is none too happy about the proposal. Tom Blackett, Deputy Director of Interbrand, has said that the mark is meaningless to consumers while John Cridland, the Deputy Director-General of the Confederation of British Industry, has said: “The move would only obscure where products have come from at a time when consumers are asking for more information, not less”. Italy and Greece are pushing for a compromise solution which would allow Member States to use the “Made in the EU” label together with a label indicating the precise country of origin.

The IPKat thinks it’s strange that, in a time when the EU is putting so much effort into promoting precise indicators of geographical origin in the form of geographical indications and trying to build reputations around those indicators, it is also arguing for a pan-European indication of source which will be of limited informational value.

Ananova reports that the BBC is to broadcast a live radio "performance" of an orchestra playing John Cage's so-called "work" 4'33" as part of a concert going out on Radio 3. The piece consists of four minutes and 33 seconds' worth of silence. In readiness for the performance, Radio 3's controllers will have to switch off their emergency back-up system, which is designed to cut in when there is an unexpected silence on air. The work has never been performed by an orchestra or broadcast on national radio in the UK before. The BBC describe Cage's piece, written in 1953, as "ambient silence". It will be broadcast as part of the station's annual Composer Weekend at the Barbican on Friday 16 January. TV viewers will be able to tune into BBC Four an hour after the radio broadcast and watch the orchestra "performing" the piece.

The IPKat says there’s no musical copyright in Cage’s 4'33" and that the pretence that any such right exists is just a poor joke. It's also about time the cultural establishment came clean: either they should admit that 4'33" is nothing other than a total con or they should be condemned to a padded cell in which they can listen to it ad infinitum. Cage must be chuckling at them from his grave.

Last week the ECJ determining whether the obligations placed on Member States under Regulation 3295/94 apply when potentially counterfeit goods which are travelling between 2 non-EU countries are in transit in an EU country. It also considered whether national law should be read in accordance with EU law where criminal penalties are at stake.

The rights of various trade mark owners were infringed by X, who transported counterfeit goods between various countries. The goods were only ever in transit in Austria and were never actually imported to or exported from Austria. Nonetheless, the mark owners requested the Austrian authorities open a judicial investigation against X. For such an investigation to be opened, a criminal offence must have taken place, but under the relevant Austrian act (the MSchG), only the import and export of counterfeit goods constitutes a criminal offence, and not their transit through Austria. The ECJ had previously held that transit of counterfeit goods was caught under Regulation 3295/94, but that case was a civil case and this case was a criminal case. Therefore, the Austrian Landesgericht Eisenstadt referred a question to the ECJ to determine whether the law, in failing to render the transit of counterfeit goods a criminal offence, was contrary to Regulation 3295/94.

The referred questions were answered as follows:
♦ As the ECJ has previously decided, Regulation 3295/94 applies where goods are in transit between two non-EU countries but are temporarily detained in an EU Member State by the customs authority of that state at the request of the company which holds the rights claimed to have been infringed. Article 11 requires Member States to introduce penalties for infringements of the prohibition laid down in Article 2 on the release for free circulation, export, re-export and placing under suspensive procedure of the counterfeit goods. The obligation under this Article applies to all types of national proceedings and does not depend on whether the national proceeding are civil, criminal or administrative.
♦ It was for the national court and not the ECJ to determine whether the Austrian MSchG applied to the mere transit of goods. However, if the national court found that it did not apply, then it would be proper for the ECJ to conclude that the Regulation precluded the national law in question. Nonetheless, national courts are required to interpret their national law in accordance with EU law in as much as it is possible. However, special considerations apply where the principle of compatible interpretation is applied to national criminal matters. Particular attention must be paid in such circumstances to legal certainty and non-retroactivity. Previous cases have held that a directive cannot be used to widen criminal liability under national law. Although the provision here was a directly effective regulation, the reasoning concerning directives applied here because it was for Member States to transpose penalties for infringement into national law. Therefore, if the national court found that the national law did not prohibit the transit of counterfeit goods across Austrian territory, criminal penalties could not be imposed for such conduct, even if the national rule was contrary to EU law.

The IPKat welcomes the sensible approach taken to legal certainty where criminal proceedings are involved taken by the ECJ in this case. He’s glad to see that some values are considered even more important than the protection of intellectual property rights.

Sunday, 11 January 2004

Is your intellectual property practice taking over your life? Do you find that you don’t have time to sit down to the four-course meals to which you were formerly accustomed? Luckily the IPKat has come to your rescue with his patent of the month, which will enable you to combine your entrée with your dessert. The patent, granted for frozen dessert finger food, is claimed for

“a frozen dessert such as ice cream that simulates the shape and color of french fried potatoes. The dessert is produced in elongate sections that have a small cross sectional area. Each section is coated on its exterior surfaces with an edible coating that serves to enhance the flavor of the dessert and to act as an insulating barrier. The coating permits a consumer to handle the individual sections with their fingers to enable consuming the dessert. The color of the coating simulates the color of french fried potatoes”.

The reason for the invention is to provide an alternative to conventional methods of ice-cream consumption. As the applicant points out

“A problem of such forms of "finger food" is that the bars are provided as a full portion and the consumer has to sequentially bite off bite-size portions and sinking one's teeth into a thick section of frozen ice cream is not always a pleasant experience.”

The IPKat however isn’t keen and has decided to give this invention the cold-shoulder, not to mention an icy reception.

CBS News reported last week that physician Gilbert Lederman has been accused of forcing a weakened George Harrison to autograph a guitar for his teenage son just two weeks before the ex-Beatle died of lung cancer and a brain tumour. A lawsuit filed by Harrison's estate claims that the musician tried to resist the request, saying "I do not even know if I know how to spell my name anymore." The suit alleges that Lederman responded by saying "Come on, you can do this" and held Harrison's hand as the musician wrote his name on the guitar "with great effort and much obvious discomfort". The estate is seeking to recover the guitar and two cards it says Harrison signed when Lederman was treating him. Harrison's widow and son believe that a National Enquirer story about Harrison's death, featuring Lederman's son holding the instrument, was orchestrated by Lederman to raise the item's value. "George was literally lying there dying and the doctor forced George to sign a guitar", said Paul LiCalsi, attorney for Harrison's estate. "The doctor should not be permitted to profit from this behaviour." The estate also accused Lederman of violating Harrison's privacy by orchestrating invasive media coverage in the interest of promoting his medical practice. Lederman conducted interviews about Harrison with several news outlets, many within hours of the ex-Beatle's death, the suit charges. The New York State Health Department has reprimanded Lederman for talking to the press about Harrison without his consent. Documents indicate that Lederman accepted his censure: a reprimand and a $5,000 fine. He has also been removed as head of radiation oncology at the Staten Island University Hospital. Lederman's attorney Wayne Roth denied the allegations. He said Lederman's son still plays the guitar and that the family has no intention of selling it (though they have since offered to donate it to charity). The instrument, valued in connection with a state investigation of Lederman's treatment of Harrison, is worth less than $10,000, Roth said.

The IPKat marvels at the initiative allegedly taken by this doctor to leverage the profile of his medical practice and to obtain signed celebrity souvenirs. Once it was standard practice for patients, on admission to hospital, to be made to sign consent forms that enabled medical practitioners to cut them into pieces or stick tubes up them without threat of legal action. But now the IPKat looks forward to drafting a form for the hospital staff to sign, limiting their ability to exploit their patients’ names, likenesses, personalities and identities. Finally, the IPKat finds it hard to see how the alleged facts add up to an invasion of privacy. Dr Lederman had access to Harrison as a patient; the signing of the guitar was more an exploitation of his rights of publicity than his privacy rights and the interviews conducted after Harrison's death took place at a time when Harrison, and hence his right to privacy, had ceased to be.

FindLaw reports that a Los Angeles court has found that a show featuring a Frank Sinatra impersonator infringed the Sinatra family’s trade mark rights in the FRANK SINATRA mark. The show, which ran in Atlantic City in 2001 and Las Vegas in 2002 was called “Sinatra: The Main Event”. Although the producers had employed a disclaimer stating that the show was unauthorised, the court found that confusion was still likely to result since the lettering used was very small. Additionally, Sinatra had used "Sinatra: The Main Event" as the title of a television program and of audio and video recordings during his lifetime. Consequently, the public would have mistakenly thought that the show was authorised by the trade mark owners, the Sinatra family.

The IPKat notes that, had this case taken place in Europe, it would probably have been an identical goods/identical marks situation although there’s still room for doubt. Arguably, as it is analogous to an “imitation X” situation, where the question arises whether there is use of an identical mark when the later user says that his goods are an imitation of the trade marked goods. Here though it seems that the public did not notice the word “unauthorised” so would have just seen the two marks as identical under the ECJ’s LTJ Diffusion case. The defendant could have argued that his use was descriptive of the contents of his show. While descriptive use is a defence under Article 6(1)(b) of Directive 89/104, such use must be in accordance with honest industrial or commercial practices. The Sinatra family may have retorted that confusing use is not honest but this is not clearly correct following last week’s Gerolsteiner decision.

Frank Sinatra here Should you have ol' blue eyes? Find out here Do it your way here

Friday, 9 January 2004

On 6 January the IPKat announced the welcome if long-overdue arrival on the ECJ website of the Advocate General’s opinion in Koninklijke KPN Nederland NV v Benelux-Merkenbureau on the registrability of composite words (in that case POSTKANTOOR, the Dutch for "post office"). The IPKat is now purring with gratitude at Mary Leger, of the ECJ, who has emailed us with the good news that the Court's full judgment will be handed down on Thursday 12 February, more than two years after the date of the Advocate General's Opinion. Thank you, Mary.

When justice delayed is justice denied: click here , here and here Why it is a bad idea to post cannabis seeds in a Dutch post office
Will Dutch postmen lead the invasion of the United States?

The BBC reports that the British Phonographic Industry is considering suing Amazon for selling CDs in the UK imported from outside the EEA. The imports allow Amazon to sell the CDs well below standard UK prices. However, the BPI is questioning whether the imports infringe the copyright of its members. A final decision has not been taken and the BPI has said that it is standard practice for it to review websites to determine whether products sold on them are legitimate. The BPI is already suing two retailers, CD-Wow and Play.com, for the same reason.

The IPKat notes that while the principles of trade mark exhaustion have been exhaustively litigated [yes – the pun is intentional!] thus far there have been few European cases considering how exhaustion applies to copyright. He awaits the outcome of any litigation with interest. UK consumers will also be interested in knowing whether the law sees any difference between them going to the US for their holidays and coming home with a luggage-load of cheap CDs, which is perfectly legal, and going to the US-based amazon.com website where they can buy the same cheap CDs without facing the hazards of international travel and the looming threat of having to get a US visa.

Thursday, 8 January 2004

The IPKat notes that the ECJ has delivered its judgment in the Rolex case concerning Council Regulation (EC) No 3295/94 of 22 December 1994 laying down measures concerning the entry into the Community and the export and re-export from the Community of goods infringing certain intellectual property rights and criminal penalties thereunder, even though the Advocate General's decision hasn't been translated into English yet. More on this case from the IPKat anon.

A report in Ananova claims that New Yorkers are renaming the pit bull terrier in an attempt to improve the dog's frightening image. The city's animal welfare agency has decided to change all its official documents to rename the pit bull the "New Yorkie". It is hoped that the image change will encourage more people to adopt the thousands of pit bulls taken in by the animal shelter each year. At present 90% of the 6,000 pit bulls taken to the New York City Animal Care and Control centre each year are destroyed.

This name change is reportedly the idea of Ed Boks, the new director of the centre. He said he came up with the idea because New Yorkers, like pit bulls, were often thought of as hard or mean, but are actually "some of the most generous and open-hearted people I've ever met". While pit bulls have suffered bad publicity following maulings and attacks, experts maintain that the breed is actually well behaved and that pit bulls outperform golden retrievers in behavioural tests. This is not the first attempt to rebrand pit pulls. In the 1990s San Francisco tried to persuade people to call pit bulls St Francis terriers, but to no avail.

The IPKat is not amused by this rebranding exercise, being firmly of the opinion that a rebranded dog remains a dog. The Pit Bull/New Yorkie may be man’s best friend, but he’s no friend of cats.

Gerolsteiner is the proprietor of the German trade mark GERRI for various non-alcoholic beverages. Putsch markets soft drinks in Germany bearing labels including the words KERRY Spring because the drinks are manufactured in Ireland by a company called Kerry Spring Water and contain water from a spring called Kerry Spring. Gerolsteiner brought infringement proceedings in Germany. The case eventually reached the Bundesgerichtshof, which found that there was a likelihood of aural confusion between the two indicia for the purposes of Article 5(1)(b).

The Bundesgerichtshof sought the ECJ’s advice over whether Article 6(1)(b) could apply in those circumstances, asking:

1. Is Article 6(1)(b) of the First Trade Mark Directive also applicable if a third party uses the indications referred to therein as a trade mark (markenmässig)?
2. If so, must that use as a trade mark be taken into account when considering, pursuant to the final clause of Article 6(1) of the First Trade Mark Directive, whether use has been in accordance with honest practices in industrial or commercial matters?

♦ Article 6(1)(b) draws no distinction between the possible uses of the indications referred to in Article 6(1)(b). Instead, the defendant’s use will fall within the scope of the defence if his indication concerns one of the characteristics enumerated in the article as long as the use is in accordance with honest practices in industrial or commercial matters. That the use must be in accordance with honest practices in industrial or commercial matters is the only requirement. This constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.
♦ The mere fact that there is a likelihood of aural confusion between the earlier registered mark and the indication of geographical origin from another Member State does not mean that the defendant’s use of the indication in the course of trade is not in accordance with honest practices. Because of the diversity of languages within the EU, there is a high likelihood that there will be some phonetic overlap between marks in some countries and indicators of geographical origin in others.
♦ It is for the national court to carry out an overall assessment of the circumstances of any particular case to establish whether the use is honest. Here for example, it would be for the court to look in particular at the shape and labelling of the bottle to assess whether the defendant was unfairly competing with the claimant.

The IPKat notes that once again the ECJ has avoided using the term “trade mark use”. By allowing defendants to make honest use even where there is confusion, the court has placed the interest of free movement before consumer protection. It remains unclear what honest practices means, though there are hints in this case that it may be an objective standard, since the court referred to the fact that similarities between marks and geographical indicators could be coincidences and spoke about unfair competition.

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